It is a famous puzzle for children, but it is also becoming a puzzle for EU trademark case law.

In a judgment handed down on 24 October 2019 (Case T-601/17), the General Court of the European Union (EGC) confirmed the cancellation of the European Union trademark consisting of the famous shape of the “Rubik’s cube” puzzle.

In the context of this judicial saga, German toy maker Simba Toys GmbH has been fighting since 2006 againts Rubik’s Brand Ltd in order to prevent a protection for the shape of the « Rubik’s cube » as an EU trademark.

The case focused on Article (7 )(1)(e)(ii) of the European Union trademark Regulation (EUTMR), which sets out the types of marks that cannot be registered as EU trademarks. According to that provision, a mark shall not be registered if it consists

“exclusively of…the shape of goods which is necessary to obtain a technical result…”

In 2016, the Court of Justice of the European Union (CJEU) (Case C-30/15 P) had to determine on the basis of the legal criteria listed above, whether or not, the mark was functional and thus, should be invalidated. Overturning the first decision rendered by the EGC considering that the shape could be protected as a trademark, the CJEU stated that the functionality of the sign should have been assessed in the light of the technical function of the actual goods concerned.

Recently, the case returned before the European Union Intellectual Property Office (EUIPO) and the EGC which both confirmed that the trademark registration should be cancelled.

Both GC and EUIPO took into account the reasoning of the CJEU and thus notably stated that the essential characteristic consisting of the grid structure of ‘black lines’ and the ‘overall cube shape’ were necessary to obtain that intended technical result.

While such reasoning may seem strict, it is important to point out that the provision of Article (7 )(1)(e)(ii) of EUTMR is intended to preclude the registration of shapes whose essential characteristics perform a technical function.

As the CJEU ruled in 2002 in the Philips case (C-299/99), in such a situation, the exclusivity inherent in the trademark right « would limit the possibility of competitors supplying a product incorporating such a function or at least limit their freedom of choice in regard to the technical solution they wish to adopt in order to incorporate such a function in their product ».

In the Philips case, the question of the trademark protection concerned a shape related to the upper side of a razor composed of three rotating heads arranged in a triangle.

It would not be surprising that future case law increases its strictness with regard to figurative trademarks.

Pierre FATON